Archive for the ‘PRPS Patent Review Processing System’ Category

PTAB Provides More Guidance on Discovery

Sunday, July 21st, 2013

On March 5, 2013, the Patent Trial and Appeal Board (PTAB or Board) provided guidance to the bar concerning routine discovery and additional discovery.  (See paper 26 in Garmin v. Cuozzo, IPR2012-00001) This decision set forth five factors which are important in determining what constitutes discovery satisfying the “necessary in the interest of justice” standard under 35 U.S.C. § 316(a)(5).  This decision is but one listed on the PTAB’s web page of Representative Orders, Decisions, and Notices, and as a result it is widely known and referenced by post-grant practitioners.

On July 18, 2013, in this same IPR, the PTAB provided yet more guidance concerning discovery.  (IPR2012-00001, paper 50) This time the guidance relates to depositions, and in particular, the circumstances where corrective filings of deposition testimony may be filed by counsel.

Over a month after cross-examinations of its experts, Cuozzo (the Patent Owner) filed errata sheets in an attempt to correct the cross-examination testimony by its experts.  A joint telephone conference was requested by the parties a few weeks later to resolve their dispute regarding the propriety of the filing of these errata sheets.  The Board conducted a telephone conference on July 16, 2013 and issued an order expunging the errata sheets because they were filed without authorization and were submitted after Garmin (Petitioner) had already responded to the (allegedly erroneous) expert testimony for Cuozzo.  The request also came after Garmin’s window of opportunity to conduct further cross examination of Cuozzo’s witnesses or to submit a revised reply to Cuozzo’s response or opposition to Cuozzo’s motion to amend claims.

The Board reminded practitioners that such requests must be authorized before a motion is filed:

The rules for an inter partes review do not provide for the filing of errata sheets in connection with the deposition testimony of a witness. Thus, a party intending to file an errata sheet, for whatever purpose, especially if it is to change the substantive testimony of a witness, must contact the Board and obtain prior authorization before doing so. One of the comments to the proposed rules for implementing inter partes review, post grant review, and covered business method patent review inquired about errata sheets and what is or is not acceptable in an errata sheet, and the Office’s response is that the rules do not provide for the submission of errata sheets and that a party who believes an errata sheet is necessary may request a conference call with the Board. Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decision; Final Rule, 77 Fed. Reg. 48612, 48642 (Aug. 14, 2012)(Response to Comments).

IPR2012-00001, paper 50 at page 3.

The Board did not absolutely rule out the possibility of authorizing entry of errata sheets in future cases, but it set forth this guidance:

We take this opportunity to state that unless unopposed by the other party, a request to make a material change to the substance of cross examination testimony is unlikely to be successful no matter when the request is made. Error in transcription is a different matter.

IPR2012-00001, paper 50 at page 4.

The Board emphasized that a party has the ability on redirect to cure any perceived deficiency of testimony or to elicit a more complete answer.

A picture of future PTAB practice is emerging as more decisions are rendered by the Board.  For an advantage in these proceedings, clients will want counsel that is versed in all of the technical aspects of the challenged invention to understand it and to be able to properly question witnesses and clarify their testimony.  Counsel should also be familiar with Patent Office practice to understand what the Board will allow procedurally, and the information that the Board needs to find in the client’s favor.  Counsel also should have litigation experience and deep legal knowledge to properly grasp the impact of testimony and to make sure that the record is as clear and complete as possible for the Board and any Federal Circuit appeal that may follow.

More Developments in the Patent Battle between SAP and Versata

Monday, July 15th, 2013

There has been a lot of activity in the litigations arising from the patent battle between SAP and Versata.  You will recall that there are parallel Federal Circuit, PTAB, and Eastern District of Virginia actions.  There have been activities in all of these courts since my last post.

Federal Circuit

After the Patent Office decided that the claims challenged in the related covered business method patent review were invalid, SAP motioned for a stay of proceedings in the Federal Circuit.  In a simple, one page document, the Federal Circuit denied that motion for stay on July 5, 2013 without providing further comment or opinion.

Patent Trial and Appeal Board (PTAB)

One month after the PTAB ruling, Versata filed a Rehearing Request.  That document shows up on the PTAB PRPS as being filed on July 11, 2013.  (It is currently showing availability to only the parties and the Board, so it was not available for download at the time of this post.)

Eastern District of Virginia

You may recall that Versata also challenged the institution of the CBM by suing the Patent Office in the Eastern District of Virginia.  As reported in a recent post, SAP intervened in that action.  On July 12, 2013, that court granted the Motion to Dismiss for Lack of Subject Matter Jurisdiction by the Patent Office and SAP.

So it appears that the contest is now boiling down to a race between a final judgment in the district court litigation and a final judgment in the PTAB proceeding.  Of course, this will likely amount to two cases before the Federal Circuit, because should Versata’s Rehearing Request fail, its recourse is an appeal to the Federal Circuit.  So that might mean two Federal Circuit cases:  (1) the existing appeal in the district court action (which was not stayed by the Federal Circuit) and (2) a (future) appeal from the PTAB decision if the rehearing request is denied.

A Tale of Two Patent Litigation Stays

Tuesday, May 14th, 2013

This is a story about not one, but two stays.  The first stay is a district court stay pending the outcome of a reexamination of a patent in suit.  The second is an administrative (PTAB) stay of that same reexamination pending the outcome of an AIA patent litigation proceeding based on that same patent.

The District Court Stay

It started when Encap, LLC filed suit against the Scotts Company on July 18, 2011 (Encap, LLC v. The Scotts Miracle-Gro Company, LLC, E.D. Wis. Case No. 1:11-cv-000685-WCG).  The complaint for patent infringement involved Encap’s U.S. Patent 6,209,259 (“the ’259 patent”) and two other patents.  The ’259 patent relates to a combination seed capsule comprising a viable seed and a coating comprising soil conditioning materials.  On March 9, 2012, the Scotts Company filed an ex parte reexamination request to challenge the patentability of the ’259 patent.  That request resulted in an order for ex parte reexamination (Reexamination Control No. 90/012,183) on April 27, 2012.  The ex parte reexamination resulted in a rejection of claims 1-5, 7-11, and 13-14 of the ’259 patent based on a Great Britain Patent 670,461 to Matthews (1949) and U.S. Pat. No. 4,065,287 to Roth (1977).  The rejection included an obviousness rejection based on a combination of Roth and U.S. Pat. No. 5,019,564 to Lowe.  In response, Encap did not amend claims but instead added new claims 15-44.  Ultimately, the district court ordered stay of the litigation in a decision dated August 31, 2012 (according to PACER).

The Reexamination Stay

The Central Reexamination Unit (CRU) handling the ex parte reexamination issued a second non-final office action on December 21, 2012.  Meanwhile, on January 10, 2013, the Scotts Company filed a petition for inter partes review of the ’259 patent in the PTAB (The Scotts Company LLC v. Encap, LLC; IPR2013-00110).  Shortly after that, Encap filed its response for rejection in the ex parte reexamination on February 21, 2013.  Encap filed a supplemental response on March 1, 2013.  A Notice of Defective Paper was issued by the PTO on April 20, 2103 allowing Encap one more month to correct its response, but Encap won’t need that month because on Monday, May 13, 2013, the Patent Trial and Appeal Board (PTAB) ordered a stay of the reexamination prior to deciding on whether to institute trial in the inter partes review.

Reasons for the Reexamination Stay

The Board noted that even though the claims subject to ex parte reexamination include additional claims that are not the subject of the IPR petition, all of the challenged claims are being reexamined.  Additionally, some of Petitioner’s asserted grounds of unpatentability in the IPR are based on the same prior art references that are the bases of the Examiner’s rejections in the reexamination.  In its Order of May 13th (at p. 2), the Board explained the administrative stay of the reexamination as follows:

The Board will not ordinarily stay a reexamination because, in the absence of good cause, reexaminations are conducted with special dispatch. Conducting the reexamination concurrently with the instant proceeding, however, would duplicate efforts within the Office and could potentially result in inconsistencies between the proceedings. Notably, because all the challenged claims also are being reexamined, the Patent Owner could amend those claims, which could change the scope of the challenged claims while the Board is conducting its review. Further, because of the overlap between the asserted prior art references in this proceeding and the bases of the Examiner’s rejections, the patentability of all of the challenged claims could be determined in both the instant proceeding and the reexamination based on the same grounds of unpatentability.

The Board is required to determine whether to institute an inter partes review within 3 months after receiving the preliminary response from the patent owner.  35 U.S.C. § 314(b).  The Patent Owner’s Preliminary Response was filed April 15, 2013 (according to PRPS).  The final determination of any review instituted will normally be issued no later than 1 year from institution. 35 U.S.C. § 316(a)(1), and 37 C.F.R. § 42.100(c).  The Board found that any decision on whether to institute a review or final written decision with respect to the patentability of the challenged claims will likely simplify the issues in the reexamination.

Patent Owner’s Preliminary Response explains that the parallel district court litigation is stayed pending the resolution of the ‘259 ex parte reexamination.  Patent Owner makes it clear that “time is of the essence” in a decision, alleging that “Petitioner continues to sell hundreds of millions of dollars of infringing products each year.”  (Patent Owner Preliminary Response at page 7).


Petitioner has used ex parte reexamination and an inter partes review to achieve a double stay; one stay in district court pending the ex parte reexamination and another stay of the ex parte reexamination (Central Reexamination Unit) pending the outcome of the PTAB inter partes proceeding.  If trial is instituted in the PTAB, it will be interesting to see how the PTAB handles the situation where an ex parte reexamination which included an amendment adding several new claims is now handled in the PTAB, where claim amendments are typically limited to a one-for-one replacement (absent permission from the Board to include more).

Exhibits for SAP v. Versata PTAB Trial on Wednesday

Tuesday, April 16th, 2013

One of the benefits of the PTAB’s PRPS system that the materials for each trial are accessible online when filed by the parties (unless designated as protected materials).  If you intend to listen in on the SAP v. Versata PTAB CBM trial on Wednesday, you might benefit from having the SAP slides and the Versata slides to page through during the trial.  I published the dialup information on my last blog entry, but repeat it again for convenience:

(571) 270-3000

meeting ID number 28001#

password 7448#

It took a lot of hard work by the PTAB to set the stage for these AIA patent trials.  This case is very unique because it is the first covered business method PTAB trial, the issues were greatly simplified to accelerate the time to trial, and that the district court case is so advanced in the appeal.  Therefore, it may not be typical of how these trials will be conducted, but the patent bar is eager to learn more about how the PTAB will conduct these trials and will be watching.

Petitions to PTAB at Three Months into AIA Post-Grant Patent Trials

Monday, December 17th, 2012

This blog post is at three months past September 16, 2012, the date upon which the PTAB began accepting petitions for inter partes review and covered business method patent review under the America Invents Act.  Considering that there are about 15 CBM and 79 IPR petitions currently on file, the PTAB is getting petitions at the rate of roughly 1 per day.  That’s a very steady stream of work for the PTAB.  Here are the companies that have filed petitions as of the time of this post:

IPR Petitioners so far:

  • ABB Inc.
  • Adidas AG
  • Apotex Inc.
  • Apple Inc.
  • Ariosa Diagnostics
  • Avaya Inc.
  • CBS Interactive Inc.
  • Chi Mei Innolux Corp.
  • Corning Inc.
  • Denso Corp.
  • EMC Corp.
  • Garmin International, Inc.
  • Idle Free Systems, Inc.
  • Illumina, Inc.
  • Intellectual Ventures Management, LLC
  • Kyocera Corp.
  • LKQ Corp.
  • Macauto U.S.A.
  • Micron Technology, Inc.
  • Microsoft Corp.
  • Microstrategy, Inc.
  • Midland Radio Corp. of Florida
  • Monsanto Company
  • Motorola Mobility LLC
  • Munchkin, Inc.
  • Nexans Inc.
  • Nichia Corp.
  • Nissan North America, Inc.
  • Oracle
  • Ranbaxy Laboratories Ltd.
  • Research In Motion Corp.
  • Schrader-Bridgeport International, Inc.
  • Sony Corp.
  • St. Jude Medical, Inc.
  • Synopsys, Inc.
  • Vestcom International, Inc.
  • Wowza Media Systems, LLC
  • Xilinx, Inc.

CBM Petitioners so far:

  • Bloomberg Inc.
  • CRS Advanced Technology, Inc.
  • Interthinx, Inc.
  • Liberty Mutual Insurance Co.
  • MeridianLink, Inc.
  • SAP America, Inc.

This is an impressive list of petitioners.  Many have multiple filings, and some have a large number of filings.  For example, Chi Mei Innolux has 7 filings, Corning Inc. has 10 filings, and Liberty Mutual has 10 filings.  Now that we are coming upon the three month mark, patent owner preliminary responses will be filed.  In the coming months, the PTAB will be deciding whether to institute trials and disovery will begin in several cases.

PTAB Provides Convenient Access to Instructive Orders, Notices, and Decisions

Saturday, December 1st, 2012

The Patent Trial and Appeals Board has provided a web page that compiles instructive orders, notices, and decisions.  This is a handy reference site for practitioners to learn from decisions made in various covered business method (CBM), inter partes reviews (IPR) and post-grant review (PGR) proceedings.

Pro Hac Vice Admission Denied in SAP v. Versata CBM Patent Review

Friday, November 9th, 2012

My prior post described the pro hac vice admission dispute between SAP and Versata Development Group in PTAB matter CBM2012-00001.  The PTAB wasted no time and issued an order denying the motion for pro hac vice admission of Versata’s litigation trial counsel on November 6, 2012.  The PTAB essentially found that Versata failed to demonstrate “good cause” for why its litigation counsel should be admitted pro hac vice in the PTAB proceeding.

Versata, as the party moving for pro hac vice admission, bears the burden of showing there is good cause for the Board to recognize counsel pro hac vice during the proceeding. Based upon the facts presented, the Board concludes that Versata has failed to meet its burden.

It is:

Ordered that Versata’s motion for pro hac vice admission of Mr. Scott L. Cole is denied.

The Board also referenced documents from the earlier litigation that indicated some sort of noted violations of a protective order in that litigation, and noted that Versata did not identify or explain the noted violations in its motion for admission:

Versata’s motion for pro hac vice admission of Mr. Cole and Mr. Cole’s declaration in support thereof are premised in part on Mr. Cole’s position as lead counsel in the related Versata v. SAP litigation. Versata’s motion and Mr. Cole’s declaration do not address or mention the district court’s finding of a pattern of protective order violations in the related litigation for which Mr. Cole was lead counsel.

As of this posting, no other entries were found in the record after this order, so this might be the final word on this dispute.


Steady Stream of AIA Post-Issuance Review Petitions Filed in PTAB

Friday, October 19th, 2012

It has been a little over one month since post grant patent reviews were authorized by the AIA and the Patent Office Patent Review Processing System (PRPS) shows about 47 petitions on file in the PTAB.

Look at it this way to put things in perspective:

  • The 47 petitions filed over this past month are just shy in number of the total number of inter partes reexamination requests filed  in the first four years of the inter partes reexamination statute (only 53 total inter partes reexamination requests were filed in the years of 2000 to 2004 according to PTO statistics).
  • If this rate of filing continues for the next 11 months, we could see about 500 petitions in the first year period, which is more than the 374 inter partes reexamination requests filed in 2011.
  • Assuming we only see about 250 such petitions this year, that would roughly equate to the number of filings of inter partes reexamination requests filed in 2009 (258).

So regardless of how many filings are made over the year, AIA post-grant proceedings are off to a very fast start compared to the adoption of inter partes reexamination.  This is interesting because there is obvious popularity despite enhanced filing fees, costs of preparation, and estoppel.

PTAB PRPS Trials Portal Gets Software Improvements

Saturday, October 6th, 2012

The PTAB PRPS Trials Portal just got better.  If you login to the system (depending on what browser you are using), you will see that PRPS now provides much better access to all public documents in each case.  This upgrade replaces the more clunkier version of the website and allows for ready access to the public documents associated with a case.  Before the improvement, it was common with current browsers to find it difficult to view subsequent screens of documents.  This is fixed in the recent upgrade, making the system much easier to use.

The system is showing 35 petitions to date:  10 CBM and 25 IPR.  In speaking with my colleagues there is a lot of interest in how the petitions are being drafted and even more curiosity how the trials will be instituted and conducted.  I will address some strategies for petitions in future posts.


New Petitions Filed for AIA Inter Partes Reviews and Covered Business-Method Patent Reviews

Thursday, October 4th, 2012

Based on a today’s count, the PTAB Patent Review Processing System (PRPS) is now showing 34 petitions for patent review.  There are 10 pending petitions for covered business-method (CBM) patent review and 24 petitions for inter partes review (IPR).

What is confusing is that the PRPS system is assigning Trial Numbers that have changed from a prefix of IPR2012 to IPR2013 in recent days (and the prefix of CBM2012 has shifted to CBM2013 recently, as well).  It is not clear if this was an intended change or a software issue, but appears to be observed as PRPS original filing dates shifted from September filing dates to October filing dates.  It will be interesting to see if these matters are reassigned a 2012 prefix in the future.

So far, the new petitioners in October include Micron Technology, Inc. and Kyocera Corporation.   Additional petitions were filed by Illumina Inc. and by Liberty Mutual.